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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Tuesday, July 19, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide patent counsel on patent acquisition agreements and what factors counsel should consider when negotiating and drafting these agreements. The panel will address the agreement's key provisions and offer best practices for negotiating and structuring these agreements.

Faculty

Peter J. Toren
Shareholder
Anderson Kill

Mr. Toren represents clients in patent litigation involving a variety of technologies including computer software and hardware, light emitting diodes, biotechnology, semiconductor manufacturing and fabrication, optics and medical devices as well as business methods. He has successfully obtained and defended motions for preliminary injunctions and summary judgment motions involving the Patent Act, Copyright Act, Lanham Act, Digital Millennium Copyright Act and Computer Fraud and Abuse Act. In addition to intellectual property litigation, Mr. Toren has experience in computer law, including cybersecurity. He is a former federal prosecutor with the Computer Crime and Intellectual Property Section of the Criminal Division of the United States Department of Justice where he worked for over eight years and also served as Acting Deputy Chief.

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Michael J. Lennon
Partner
Potomac Law Group, PLLC

Mr. Lennon is a Partner in the firm’s Litigation, Patent, Intellectual Property, and Technology and IP Transactions Practices, focusing on complex litigation, licensing and business transactions relating to intellectual property rights. Over his decades of practicing law, Mr. Lennon has represented and acted as an advisor to numerous multinational technology companies in industries ranging from medical devices to wind power systems. In transactional matters, Mr. Lennon acts as both legal counsel and as a strategic advisor to his clients, and he has negotiated numerous agreements relating to the acquisition, licensing and monetization of IP. He has appeared as trial counsel in more than 125 patent infringement, trade secret, licensing dispute and patent-antitrust lawsuits in the U.S. federal district courts, the U.S. International Trade Commission and the Federal Circuit.

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Gregory L. Ewing
Partner
Potomac Law Group, PLLC

Mr. Ewing focuses his practice on dispute resolution and advising clients around cyber security, privacy, blockchain, and other technology related issues. He has extensive experience in high-profile international and domestic arbitration and litigation matters advising all sizes of clients, from Fortune 100 businesses, to non-U.S. sovereigns, to small businesses and individuals. Mr. Ewing also brings a deep technical knowledge to his practice. He was a software developer and consultant before law school, which gives him the practical background to give clients the legal advice they need on all manners of technological issues.

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Description

When acquiring patents from outside the company, the buyer should consider a number of important factors. First, all record owners of the IP must be parties to the patent acquisition agreement. Often patents are assigned, and the buyer wants to ensure that the assignee is obligated to transfer ownership of the patent. If the buyer is granting back a licensee to the seller, the parties should consider including that in the agreement.

Several important provisions should be in the agreement, including transfer provisions, reps and warranties, indemnification, and dispute resolution provisions. For example, the parties may want to include that the use of the patent does not violate any third-party rights, and there have been no third-party infringement claims. Further, the parties may want to include the term and termination of any patent and know-how licenses among the transfer provisions.

Patent buyers should also consider the Supreme Court's ruling in Hologic (2021), which may warrant some additional contractual protections. Those acquiring a patent should also include representations and warranties to ensure that all information relevant to validity is disclosed.

Listen as our authoritative panel of patent attorneys examines patent acquisition agreements and what factors counsel should consider when negotiating and drafting these agreements. The panel will offer best practices for negotiating and structuring these agreements.

Outline

  1. Key considerations when acquiring patents
    1. Defects
    2. Enforceability of the patent
    3. Licensing agreements in place and any potential patent misuse issues
    4. Validity
    5. Freedom to operate
  2. Structuring the acquisition agreement
    1. Definitions and identification of the IP assets
    2. Transfer provisions
    3. Reps and warranties
    4. Indemnification
    5. Dispute resolution provisions
  3. Best practices

Benefits

The panel will review these and other noteworthy issues:

  • What should patent counsel consider when structuring patent acquisition agreements?
  • What should you do if your counterparty refuses to indemnify your client?
  • When negotiating an acquisition agreement, what approaches should counsel use to protect a client's interests?